What are the key considerations for patent attorneys when drafting apparatus and product claims?
When drafting apparatus and product claims, patent attorneys should consider the following key points to navigate potential restriction requirements:
- Clearly differentiate between apparatus and product claims
- Consider the relationship between the apparatus and the product it produces
- Draft claims that highlight the unique features of both the apparatus and the product
- Be prepared to argue against a potential restriction requirement
According to MPEP 806.05(g), attorneys should be aware that:
“An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.”
By considering these factors during claim drafting, attorneys can potentially avoid or be better prepared to respond to restriction requirements.
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